Recent papers:

“EC Communication setting out the EU Approach to standard essential patents”, 6 February 2018. The FSA very much welcomes the European Commission’s decision to issue forward-looking guidance to European industry on the licensing of Standard Essential Patents (SEPs). The guidelines are an important step towards clarifying the meaning of fair, reasonable and non-discriminatory (FRAND) licensing and the framework within which standardized technology is licensed. Download our position paper.

“The Importance of maintaining the open source software value proposition”, 23 October 2017. Despite the success of the OSS ecosystem, some companies are advocating for standards-development organizations (SDOs) to host OSS projects under an IPR policy that allows contributors to preserve a proprietary interest in the intellectual property rights of their contributions to the OSS project – allowing those contributors to seek patent royalties from users of the code generated under the project. Of concern is that the proposal violates core OSI principles of the Open Source Definition, making it clear that the proposed license model is not a true Open Source Software model. Rather, as discussed more fully in this paper, it is more appropriately viewed as a proprietary software development model. Download our position paper. Download our position paper.

Download our response to the European Commission’s Roadmap on Standard Essential Patent for a European Digitalized Economy, 8 May 2017

“Facilitating the Fair and Balanced Settlement of Disputes on SEPs”, 15 February 2017 The fair and balanced settlement of disputes regarding SEP licensing on FRAND terms outside of litigation must provide for voluntary participation, neutral rules, decision-makers who consider the merits under the traditional rules concerning the burden of proof, and some degree of transparency to the public. A party should not be considered “unwilling” to reach an agreement or to enter into mediation or arbitration proceedings because it does not agree to the proposed procedural rules governing such mediation or arbitration, or to a proposed mediator or arbitration tribunal. Where a judicial decision is taken finding an infringement of a SEP, the judiciary should always consider the requirements of fairness, equity and proportionality before issuing an injunction against an infringer. Download our position paper

“Transparently FRAND: The Use (and Misuse) of Confidentiality Obligations in FRAND Licensing Negotiations”, 13 February 2017. Some companies that claim to own standards essential patents (SEPs) demand that the companies they approach for licensing first must enter into broad non-disclosure agreements as a condition of receiving more detailed information about the relevant SEPs and proposed license terms. This paper addresses such practices, and explains that – in order to fairly and transparently assess whether a licensing proposal is or is not FRAND – a potential licensee should be entitled to obtain, without demands for excessive secrecy, details regarding the alleged basis and support for the patent holder’s SEP licensing demands. Download our position paper in English or in Chinese.

“Injunction in accordance with the principles of equity and proportionality”, 23 January 2017. When deciding on the appropriateness of injunctive relief in respect of one or more SEPs, factors such as the market participation of the patent holder, proportionality, and the interests of the general public should be taken into consideration. When a SEP holder has voluntarily committed to license its patents under FRAND terms, a ruling made in favour of damages or a licence as opposed to injunctive relief will often provide for a more proportionate remedy. In the interest of maximizing innovation, it would be highly desirable for lawmakers to take into consideration the particularities of SEPs and provide corresponding guidance. Download our position paper.

“Application-dependent SEP licensing”, 30 August 2016. In this paper, we explain why varying licensing terms for SEPs based on the application for which a SEP is used may not be consistent with a patent owner’s commitment to license its SEPs on Fair, Reasonable, and Non-Discriminatory (FRAND) terms. Download our position paper in English or in Chinese.

“SEP licences available to all”, 24 June 2016. Standards setting orgamisations (SSOs) obligate contributors to license Standards Essential Patents (SEPs) on Fair, Reasonable and Non-discriminatory (FRAND) terms. However, some SEP holders are failing to comply with the Non-discriminatory requirement of FRAND and are refusing to license subsystems manufacturers. This paper addresses the negative impact of such discriminatory licensing practice on the product ecosystem and on consumers. The paper explains why this practice is not acceptable and why FRAND SEP licenses must be available to all entities, regardless of their role within the product supply chain. Download our position paper.

Download our response to the Government of India’s Department of Industrial Policy & Promotion regarding its Discussion Paper on SEPs and their availability on FRAND terms, 22 April 2016

Download our response to the European Commission’s consultation on the Intellectual Property Right Enforcement Directive: submission form and our position paper, 14 April 2016